Appeal No. 2003-1424 Page 6
Application No. 09/961,623
Klein’s solution to this problem is to store the second active agent (erythromycin)
separately from the benzoyl peroxide-containing composition.
Thus, Klein would have led those skilled in the art to expect that
combining urea with Klein’s benzoyl peroxide composition would have produced
an unstable composition that would soon display an unacceptable loss of
keratolytic potency. It would seem, therefore, that Klein would have discouraged
those of skill in the art from making the combination required by the instant
claims. Such a disclosure is evidence of unobviousness. See Arkie Lures Inc. v.
Gene Larew Tackle Inc., 119 F.3d 953, 957-58, 43 USPQ2d 1294, 1297 (Fed.
Cir. 1997) (“It is insufficient to establish obviousness that the separate elements
of the invention existed in the prior art, absent some teaching or suggestion, in
the prior art, to combine the elements. . . . The evidence that the combination
was not viewed as technically feasible must be considered, for conventional
wisdom that a combination should not be made is evidence of unobviousness.”).
Other Issues
According to the “Search Notes” section of the file wrapper, the examiner’s
search of the patent and non-patent literature consisted of the keywords “benzoyl
peroxide”, “urea”, and “keratolytic”. Notable by its absence is the keyword
“acne”. We recommend that, upon return of this case and before issuing a
Notice of Allowability, the examiner re-search the relevant databases and include
“acne” as a search term. Such a search may well turn up more relevant prior art
than is currently in the record.
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